Dawn Jackson is a co-author of this post and is a Summer Associate at Bradley.
The Supreme Court ruled on May 18 that Andy Warhol’s “Orange Prince” work of pop art was not a fair use when licensed to Condé Nast in 2016. Although this landmark copyright decision is hot off the presses, the facts date back to 1981 when the underlying photograph was first shot. Photographer Lynn Goldsmith photographed Prince for Newsweek, when the now-iconic musician was still only an “up and comer.” Goldsmith’s photograph was then licensed to Vanity Fair in 1984 for $400 as a “one time” “artist reference for an illustration.” The artist was none other than Andy Warhol. Warhol created the print that was used in the 1984 Prince article in Vanity Fair, for which Goldsmith received her modest sum and artistic credit.
Upon Prince’s death in 2016, Condé Nast (the parent company of Vanity Fair) ran a commemorative feature on Prince and used another Warhol-based-on-Goldsmith work. Apparently, Warhol had created an entire series of 15 other works of pop art using Goldsmith’s initial photograph. The magazine cover used the “Orange Prince” work in the series, and Goldsmith contacted the Andy Warhol Foundation (AWF) because she had not received any further money or credit for this new 2016 licensing of another, previously unknown work in the Prince series. AWF proceeded to sue Goldsmith, seeking a declaratory judgment of noninfringement or fair use. Goldsmith countersued, claiming copyright infringement of her photograph.
Courts weigh the following four factors to determine if a use is fair, and therefore not copyright infringement: (1) the purpose and character of the new use, “including whether such use is of a commercial nature or is for nonprofit educational purposes,” (2) the nature of the copyrighted work, (3) the amount of the copyrighted work that is used in the new work, and (4) the effect of the new use on the copyrighted work’s market or value (17 U.S.C. § 107). Although lower courts disagreed on a number of factors, the sole issue before the Supreme Court was whether the first factor of copyright fair use analysis weighed in AWF’s favor.
The majority held that the first fair use factor did not weigh in AWF’s favor, affirming the Second Circuit decision that the licensing of Warhol’s Orange Prince was not a fair use. Tensions ran high in the 7-2 decision. The majority opinion, penned by Justice Sonia Sotomayor, emphasized that the decision was based on the foundation of previous fair use decisions such as Campbell and Harper & Row. In particular, the majority did not find that the Warhol work was “transformative” in the manner required by the fair use statute but was rather “supplanting” the original work. Crucially, the majority argued that for a “transformative use” to be a fair use required that it take on something more than a merely commercial use or exploitation. In this case, both Goldsmith’s photograph and Warhol’s art are representations of Prince. Warhol’s representation was based on and “transformed” Goldsmith’s photograph in a manner that made it a derivative work, and as such the right to create a derivative work such as the pop art and commercially license it should belong to Goldsmith, the copyright holder.
On the other hand, Justice Elena Kagan’s dissenting opinion (joined by Chief Justice John Roberts) detailed the “laborious” creative process that Warhol undertook to bring the work from photo to silkscreen, and the transformation in character that arose from his artistic vision. The dissent argued that the majority incorrectly disregarded this transformative character in favor of honing in on the commercial purpose aspect, obscuring the broader purpose of fair use as a copyright infringement “escape valve” for creatives. Further, the dissent focused on the dire implications of disavowing fair use in this case. Notably, Justice Kagan wrote that this outcome will “make our world poorer.” In essence, the dissent implied that this ruling will potentially disincentivize and dissuade creatives from making art that builds off of its predecessors, out of fear of litigation for copyright infringement.
One interesting note concerns the tenor of the opinions. While the case involves an important issue in copyright law and two famous artists, it was not expected to be one of the more controversial cases of the Supreme Court’s term. Nevertheless, Justice Sotomayor’s majority opinion contained several pages of long footnotes targeting the dissent in surprisingly blunt terms. Justice Kagan’s dissent responded with a half-page footnote taking issue with the majority’s footnotes and suggesting such footnotes themselves lacked logical rigor.
The Big Picture
The further tweaking of the fair use analysis from the majority may lead to confusion in lower courts as to how to handle cases with different fact patterns, such as when an underdog artist creates a vastly distinct new work from a famous reference point. The conflict of balancing the copyright holder’s right to create derivative works and the fair use right to create a transformative work remains murky and without a clear answer across contexts.
Because Warhol’s commercial power tinged the context here, this ruling against fair use may have unintended implications for the broader artistic community, as foreshadowed by the dissent. Whether the majority or the dissent got it right will be seen in the years to come, in future cases or even corrective legislation.
*Dawn Jackson is not a licensed attorney.